No. I O’)JUL22

REED ELSEVIER INC., THOMSON CORPORATION, DIALOG CORPORATION,GALE GROUP, INC., WEST PUBLISHING COMPANY, INC., DOT JONES &COMPANY, INC., DOT JONES REUTERS BUSINESS INTERACTIVE, LLC,I~IGHT RIDDER INC., KNIGHT RIDDER DIGITAL, MEDIASTREAM, INC.,NEWSBANK, INC., PROQUEST COMPANY, UNION-TRIBUNE PUBLISHINGCOMPANY, NEW YORK TIMES COMPANY, COPLEY PRESS, INC. and EBSCOINDUSTRIES, INC., Petitioners,

U.

LETTIE COTTON POGREBIN, E.L. DOCTOROW, TOM DUNKEL, ANDREA DWOR-

KIN, JAY FELDMAN, JAMES GLEICK, RONALD HAYMAN, ROBERT LACEY, RUTH

IANEY, PAULA MCDONALD, P/K ASSOCIATES, INC., LETTY COTTIN POGREBIN,GERALD POSNER, MIRIAM RAFTERY, RONALD M. SCHWARTZ, MARY SHER-

MAN, DONALD SPOTO, MICHAEL CASTLEMAN INC., ROBERT E. TREUHAFT AND

JESSICA L. TREUHAFT TRUST, ROBIN VAUGHAN, ROBLEY WILSON, MARIE

WINN, NATIONAL WRITERS UNION, THE AUTHORS GUILD, INC. and AMERI-

CAN SOCIETY OF JOURNALISTS AND AUTHORS,Respondents,

IRVIN MUCHNICK, ABRAHAM ZALEZNIK, CHARLES SCHWARTZ, JACK SANDS,TODD PITOCK, JUDITH STACEY, JUDITH TROTSKY, CHRISTOPHER GOOD-RICH, KATHY GLICKEN and ANITA BARTHOLOMEW,

Respondents.

On Petition For Writ of Certiorari to theUnited States Court of Appeals for the Second Circuit

PETITION FOR A WRIT OF CERTIORARI

CHARLES S. SIMSCounsel of Record

JOSHUA W. RUTHIZERPROSKAUER ROSE LLP1585 BroadwayNew York, New York 10036(212) 969-3000

Counsel for Petitioner Reed Elsevier, Inc.

(Additional Counsel On the Reverse)

James F. RittingerSATTERLEE STEPHENS BURKE

& BURKE230 Park AvenueNew York, New York 10169(212) 404-8770Counsel for Petitioners The

Dialog Corporation, ThomsonCorporation, Gale Group, Inc.and West Publishing Company

James L. HallowellGIBSON, DUNN

& CRUTCHER LLP200 Park Avenue, 47th FloorNew York, New York 10166(212) 351-3804

Counsel for PetitionerDoT Jones & Company, Inc.

Brian WalchLATHAM & WATKINSSears Tower, Suite 5800Chicago, Illinois 60606(312) 876-7738Counsel for Petitioner

ProQuest Company

Christopher M. GrahamLEVETT ROCKWOOD P.C.33 Riverside AvenueWestport, Connecticut 06880(203) 222-0885Counsel for Petitioner

NewsBank, Inc.

Kenneth RichieriGeorge FreemanTHE NEW YORK TIMES COMPANY620 Eighth AvenueNew York, New York 10018Counsel for Petitioner

The New York Times Company

Henry B. GutmanSIMPSON THACHER

~ BARTLETT LLP425 Lexington AvenueNew York, New York 10017(212) 455-3180Counsel for Petitioner DoT Jones

.Reuters Business InteractiveLLC, d/b/a Factiva

Ian BallonGREENBERG TRAURIG LLP2450 Colorado Avenue,

Suite 400ESanta Monica, California 90404(310) 586-6575Counsel for Petitioners Knight

Ridder, lnc., Knight RidderDigital and Mediastream, Inc.

Michael DennistonBRADLEY, ARANT, ROSE

& WHITE, LLP1819 Fifth Avenue NorthBirmingham, Alabama 35203(205) 521-8244Counsel for Petitioner

EBSCO Industries, Inc.

Raymond R. CastelloFISH & RICHARDSON PCCiticorp Center, 52nd Floor153 East 53rd StreetNew York, New York 10022(212) 641-2364Counsel for Petitioners

Copley Press Inc. and UnionTribune Publishing Company

QUESTIONS PRESENTED

1. Whether the usual power of lower courts toapprove a comprehensive settlement releasing claimsthat would be outside the courts’ subject matterjurisdiction to adjudicate, confirmed in Matsust~ltaElec. Indus. Co. y. Epsteln, 516 U.S. 367 (1996), waseliminated in copyright infringement actions by 17U.S.C. § 411(a).

2. Whether the Second Circuit erred by ignoringthe assurance in New York Times Co. v. Tasini, 533U.S. 483, 505 (2001), that the problem ofcompromised electronic news archives could beremedied by "[t]he Parties (Authors and Publishers[entering] into an agreement allowing continuedelectronic reproduction of the Authors’ works., o andremunerating authors for their distribution."

ii

PARTIES TO THE PROCEEDING

There are no additional parties to theproceedings other than those listed in the caption.

The first group of respondents identified in thecaption (E.L. Doctorow et M.) were plaintiffs in thedistrict court and appellees, along with defendants,in the Second Circuit.

The second group of respondents identified in thecaption (Irvin Muchnick et M.) were objectors in thedistrict court and appellants in the Second Circuit.

CORPORATE DISCLOSURE STATEMENT

Pursuant to Sup. Ct. R. 14.1(b) and 29.6, and toenable justices of the court to evaluate possibledisqualification or recusal, petitioners - ReedElsevier Inc., Thompson Corporation, Dialog Corpor-ation, Gale Group, Inc., West Publishing Company,Inc. D/B/A West Group, Dow Jones & Company, Inc.,Dow Jones Reuters Business Interactive, llc, D/B/AFactiva, EBSCO Industries, Inc., Knight-Ridder Inc.,Knight Ridder Digital, Copley Press, Inc., Media-stream, Inc., The New York Times Company,NewsBank, Inc., ProQuest Company, and ProQuestInformation and Learning Company - certify thatthe following are all of the corporate parents andother publicly held companies owning 10% or more ofany petitioner’s stock:

Reed Elsevier plcThompson CorporationThomson Reuters Corporation

oo.111

Thomson Reuters PLCDow Jones & Company, Inc.News CorporationReuters Group plcThe McClatchy CompanyProQuest Company.

iv

TABLE OF CONTENTS

QUESTIONS PRESENTED .......................................i

PARTIES TO THE PROCEEDING ...........................ii

CORPORATE DISCLOSURE STATEMENT ...........ii

TABLE OF CITED AUTHORITIES ..........................vi

PETITION FOR A WRIT OF CERTIORARI .............1

OPINIONS BELOW ....................................................1

STATEMENT OF JURISDICTION ............................1

STATUTORY PROVISION INVOLVED ....................1

STATEMENT OF THE CASE ....................................2

REASONS FOR GRANTING THE PETITION .......11

I. THE DECISION THAT THE DISTRICT COURTLACKED JURISDICTION TO APPROVE ASETTLEMENT RELEASING CLAIMS ITCOULD NOT ADJUDICATE CONFLICTSWITH DECISIONS OF THIS AND OTHERCOURTS ..............................................................13

A. The Decision Conflicts with EstablishedLaw Regarding the Settlement andRelease of Claims ...........................................13

B. The Decision Misapprehends the Text andPurpose of Section 411(a) of the CopyrightAct ..................................................................19

C. The Decision Cannot Be Reconciled WithThis Court’s Precedent Governing thePhrase "Except as Expressly Provided". .......25

II. THE DECISION CANNOT BE RECONCILEDWITH THIS COURT’S EXPECTATION IN

V

TASINITHAT AUTHORS AND PUBLISHERSMAY ENTER INTO ENFORCEABLEAGREEMENTS ALLOWING CONTINUEDELECTRONIC REPRODUCTION OFAUTHORS’ WORKS ...........................................26

CONCLUSION ..........................................................31

APPENDIX ................................................................la

A. Opinion of the Second Circuit .......................la

B. Letter of the Second Circuit RequestingBriefing on Subject Matter Jurisdiction .....46a

C.Hearing Transcript of the Southern District ofNew York ...................................................... 48a

D. Order of the Southern District of New York

E. Order of the Second Circuit Denying Petitionfor Rehearing, or in the Alternative,Rehearing En Banc ...................................... 59a

F.Letter from the Supreme Court of the UnitedStates Extending the Time to File a Petitionfor a Writ of Certiorari to August 13, 2008 62a

vi

TABLE OF CITED AUTHORITIES

Cases

Arba ugh v. Y & H Corp.,546 U.S. 500 (2006) ................................................18

Breuer v. Jim’s Concrete of Brevard, Inc.,538 U.S. 691 (2003) ..........................................25, 26

Class Plaintiffs v. City of Seattle,955 F.2d 1268 (9th Cir. 1992) ..........................14, 30

Exxon Mobil Corp. v. Allapattah Servs.,545 U.S. 546 (2005) ................................................22

Grimes v. Vitalink Comme’ns Corp.,17 F.3d 1553 (3d Cir. 1994) ...................................14

Grupo Datatlux v. Atlas Global Group, L.P.,541 U.S. 567 (2004) ................................................21

Herman & MaeLean v. Huddleston,459 U.S. 375 (1983) ................................................21

In re Corrugated Container Antitrust Litig.,643 F.2d 195 (5th Cir. 1981) ..................................14

In re Prudential Ins. Co. of Am. Sales Practice Litig.,261 F.3d 355 (3d Cir. 2001) ................................... 14

In re United States Oil & Gas Litig.,967 F.2d 489 (11th Cir. 1992) ................................29

Lexecon Inc. v. Milberg Weiss Bershad Hynes &Leraeh,523 U.S. 26 (1998) ..................................................14

vii

Local No. 93, Int7 Assoc. of Firefighters v. City ofCleveland,478 U.S. 501 (1986) .......................................... 16, 1.7

Local Union No. 38, Sheet Metal Workers ’ Int T Ass’n,AFL-CIO v. Pelella,350 F.3d 73 (2d Cir. 2003) ..................................... 21

Matsushita Elec. Indus. Co. v. Epstein,516 U.S. 367 (1996) ........................................passim

McDermott, Inc. y. AmClyde,511 U.S. 202 (1994) ................................................28

New York Times Co. y. Star Co.,195 F. 110 (2d Cir. 1912) .......................................21

New York Times Co. y. Tasini,533 U.S. 483 (2001) ..........................................12, 26

Nottingham Partners y. Trans-Lux Corp.,925 F.2d 29 (1st Cir. 1991) ....................................14

Olan MiIls, Inc. y. Linn Photo Co.,23 F.3d 1345 (8th Cir. 1994) ..................................24

Pac. and S. Co. v. Duncan,744 F.2d 1490 (11th Cir. 1984) ..............................24

Perfect 10, Inc. v. Amazon.eom, Inc.,508 F.3d 1146 (9th Cir. 2007) ................................24

Steiner v. Am. Broad. Co.,No. CV 00-05798 (C.D. Cal. Apr. 20, 2005), affld onother grounds, No. 05-55773, 2007 U.S. App.LEXIS 21061 (9th Cir. Aug. 29, 2007) .................. 19

viii

TBK Partners Ltd. y. Western Union Corp.,675 F.2d 456 (2d Cir. 1982) ...................................15

Wal-Mart Stores, Inc. y. Visa U.S.A., Inc.,396 F.3d 96 (2d Cir. 2005) .....................................14

Washingtonian Publ’ g Co. v. Pearson,306 U.S. 30 (1939) ..................................................24

Williams y. GE Capital Auto Lease,159 F.3d 266 (7th Cir. 1998) ..................................16

Statutes

28 U.S.C. § 1367 ........................................................25

28 U.S.C. § 1367(a) ....................................................10

Other Authorities

2 Nimmer on Copyright ¶ 7.16[C][3] ........................23

H. Rep. No. 94-1476 (1976), reprinted in 1976U.S.C.C.A.N. 5659 .................................................23

Judith Resnik, Procedure as Contract, 80 NotreDame L. Rev. 598 (2005) .......................................15

Supplementary Report of the Register of Copyrightson the General Revision of the U. S. CopyrightLaw: 1965 Revision Bill, 89th Cong., 1st Sess ..... 23

PETITION FOR A WRIT OF CERTIORARI

Petitioners respectfully petition for a writ ofcertiorari to review the judgment of the UnitedStates Court of Appeals for the Second Circuit.

OPINIONS BELOW

The opinion of the United States Court of Appealsfor the Second Circuit is reported at 509 F.3d 116 (2dCir. 2007). Pet. App. la. The final judgment of theUnited States District Court for the SouthernDistrict of New York is unpublished and reproducedat Pet. App. 53a. The unpublished decision of thedistrict court is transcribed and reproduced at Pet.App. 48a-58a.

STATEMENT OF JURISDICTION

The court of appeals judgment was entered onNovember 29, 2007. Pet. App. la. A timely petitionfor rehearing and rehearing en banc was denied onApril 15, 2008. Pet. App. 59a. The jurisdiction ofthis Court is invoked under 28 U.S.C. § 1254(1). OnJune 9, 2008, Justice Ginsburg extended the time tofile a petition for writ of certiorari to and includingAugust 13, 2008. Pet. App. 62a.

STATUTORY PROVISION INVOLVED

17 U.S.C. § 411(a) provides, in pertinent part:

[N]o action for infringement of thecopyright in any United States work shall

2

be instituted until.., registration of thecopyright claim has been made inaccordance with this title.

STATEMENT OF THE CASE

This case presents an issue of exceptionalimportance to the nation’s archival databases,newspaper and magazine publishers, and freelanceauthors: whether, in connection with the nationwideclass action spawned by New York Times Co. v.Tasini, 533 U.S. 483 (2001), the parties may globallysettle their differences by compensating andreleasing the claims of all freelance authors withrespect to all their contributions to the databases,whether registered or unregistered. This Court’sTasini decision appears to expressly contemplatethat the parties could structure such a globalsettlement, and the parties spent over four years ofintensive negotiations in order to achieve just suchan industry-wide settlement which was approved bythe district court under Rule 23.

The Second Circuit, however, vacated the orderapproving the settlement, holding that courts lacksubject matter jurisdiction to approve any settlementthat includes a release of copyright infringementclaims for unregistered works. The court’s solerationale, erroneous as a matter of law, was that theregister-before-instituting-suit provision of the Copy-right Act, 17 U.S.C. § 411(a) forecloses courts fromapproving settlements covering unregistered works.

The Second Circuit ignored decades of decisionsby this Court, federal appellate courts, and statecourts, which had uniformly held that in the

interests of settling disputes courts may releaseclaims that they lacked jurisdiction to adjudicate,and that the approval of a settlement agreementproviding for the release of claims is not a jurisdic-tionally barred adjudication of such claims, butmerely the approval of a private settlement betweenthe parties (which in this case complies with Rule 23and the Due Process clause and is in the publicinterest).

1. This petition stems from an appeal to theSecond Circuit by a handful of objectors to thesettlement of a consolidated copyright class actionbrought in the wake of New York Times Co. v.Tasini, 206 F.3d 161 (2d Cir. 1999), a£t~d, 533 U.S.483 (2001). Plaintiffs in the underlying action arefreelance authors whose periodical freelance articleswere included in electronic databases under licensefrom newspaper and magazine publishers.

Each of the pleaded claims of the named plain-tiffs complied with the register-before-institutir~g-suit requirement of 17 U.S.C. § 411(a). In order toassure the complete peace which the defendants andpublishers required as a condition to settlement, andwhich is a usual feature of class action settlements,the settlement here provided compensation to classmembers in exchange for release of all their claims,for both registered and unregistered freelancearticles. The district court considered and approvedthe settlement in compliance with Fed. R. Civ. P.23(e) and certified a settlement class in compliancewith Rule 23(a) and (b).

Nonetheless, turning four years of intense media-tion and bargaining into so much wasted effort, and

4

thwarting the hard work of the nation’s freelanceauthor community, databases, and newspaper andmagazine publishers, the Second Circuit reversed thedistrict court, on a ground not raised by any party orobjector. It held that § 411(a) strips the courts ofjurisdiction to approve a class action settlement thatcompensates and releases claims for unregisteredworks over which the court would not at presenthave jurisdiction to adjudicate. The Second Circuit’sdecision is in conflict with this Court’s decision inMatsushit~ Elec. Indus. Co. v. Epstein, 516 U.S. 367(1996), and dashes the expectations expressed by theCourt in Tssin£

2. TasinL brought individually by six freelanceauthors, held that the statutory provision on whichthe database, newspaper, and magazine industrieshad relied, 17 U.S.C. § 201(c), did not establish theirright to reproduce and distribute the contents of thenation’s newspapers and magazines in electronicarchives such as LexisNexis. After T~sini, defeatinginfringement liability and the estabhshing the rightto retain freelance articles in the databases woulddepend on a showing, for each freelance article, thatthe author had conveyed the necessary rights inwriting or, for nonexclusive licenses, orally or byconduct.

Following the Second Circuit’s decision in T~sini,more than a score of other freelance authors,supported by national authors’ rights trade organiza-tions, filed four class action lawsuits against onlinedatabases and certain publishers.1 The lawsuits

1 Posner y. Gale Group, 00-civ-7376 (S.D.N.Y.); Laney go DowJones & Co., 00-769 (D. Del.); Authors Guild y. The DiMog

5

were all properly commenced and subject to thedistrict court’s undoubted subject matter jurisdiction,as each of the named plaintiffs had prior toinstituting suit registered the allegedly infringedfreelance articles with the United States CopyrightOffice, as required by 17 U.S.C. 411(a), whichrequires registration of a work before an "action forinfringement of the copyright" is "instituted."Supported by The Authors Guild, the NationalWriters’ Union, and the American Society ofJournalists and Authors, the lawsuits were consoli-dated for pretrial purposes in the Southern Districtof New York. Jurisdiction rested on 28 U.S.C. § 1338(acts of Congress related to copyright) and 28 U.S.C.§ 1331 (federal question).

Plaintiffs’ claims (and those of the putative class)involved a complex set of potential liabilities result-ing from the databases’ distribution of freelancearticles provided by the publishers, and thepublishers’ representations of adequate rights andpromises of indemnity. The consolidated action wassuspended pending decision in Tasln£ In 2001, thisCourt held that 17 U.S.C. § 201(c) did not itselfprovide a defense to infringement claims of freelanceauthors with respect to their periodical freelancearticles included in databases under license fromnewspaper and magazine publishers, 533 U.S. 483(2001), leaving each of the defendants free to defendeach claim on individualized grounds (e.g., oral orwritten licenses, statute of limitations, waiver, orestoppel).

Corporation, 00-civ-6049 (S.D.N.Y.); and Authors Guild v. NewYork Times, 01-civ-6032 (S.D.N.Y.).

6

The class action was reactivated after thisCourt’s decision in Tasini. United States DistrictJudge George B. Daniels suggested mediation. Theparties agreed, and the court approved KennethFeinberg to act as mediator. (A highly respected andeffective mediator, Mr. Feinberg was appointed bythen-Attorney General Ashcroft as Special Master ofthe September 11 Victim’s Compensation Fund.)

Four years of intensive, complex and costlymediation ensued. The mediation included discus-sions and negotiations between the parties as well asother publishers not named as defendants but whohad delivered their contents to the databases withrepresentations of adequate rights and promises ofindemnity, and therefore held interests indispensa-ble to both global resolution of the asserted claimsand restoration of the integrity of the electronicarchives on which scholars and the public had cometo rely. The mediation was further complicatedbecause it effectively entailed separate yet inter-dependent sets of negotiations between freelanceauthor groups, print publishers (and their insurers),and the electronic databases (and their insurers) inorder to agree on terms and raise the fundsnecessary to compensate freelance authors andrestore the rich electronic archival records. T~sinihad recognized that archives had been seriouslyharmed by redactions made under the specter ofcontinuing liability, and had expressly suggestedthat the problem could be addressed by "[t]he parties(Authors and Publishers) [entering] into an agree-ment allowing continued electronic reproduction ofthe Authors’ works." Tssini, 533 U.S. at 505.

7

In March 2005, after a herculean effort, theauthors, database proprietors, and nearly 40 pub-lishers who consented to fund more than half of theagreed-to settlement amount reached a comprehen-sive settlement agreement. Freelance authors wouldgain the right to submit claims for all freelancearticles in the databases for which they had notlicensed electronic rights in writing, regardless ofwhether (a) copyright in the article had already beenregistered in the Copyright Office, (b) claims on thosearticles had been previously asserted in the action,(c) there were oral licenses or other availabledefenses, or (d) the article had ever been accessed.Every freelance article in the databases was eligiblefor compensation, pursuant to an agreed-onschedule. Authors were also entitled to deny futureuse of their articles. In exchange, all past, present,and future claims of freelance authors for articlespresently in the databases would be released. Thosereleases would effectively permit the restoration ofarticles taken down, and would also permit publish-ers and the databases to retain in the electronicarchives freelance articles that had not yet beentaken down (save for the few as to which future usewas expressly denied).

During the claims period, which endedSeptember 30, 2005, thousands of freelance authorssubmitted detailed claim forms, electronically or onpaper, seeking compensation with respect tohundreds of thousands of newspaper and magazinearticles, which has not been (and unless this Courtgrants review and reverses will not be) paid.

4. Objections were filed on behalf of ten authors.Although the objectors raised more than thirty

8

discrete objections in opposition to the motion forapproval, they did not challenge the court’s jurisdic-tion to approve a settlement compensating unregis-tered works. After carefully considering the objec-tors’ many contentions and holding a day-longargument, the district court overruled the objections,certified a class of freelance authors under Rule 23(a)and (b), approved the settlement as fair, reasonable,and adequate under Rule 23(e), and entered finaljudgment. Pet. App. 48a-58a.

5. The objectors appealed, complaining of theinsufficient payments for unregistered works and therelease of future claims, but again not arguing thatthe district court lacked jurisdiction to certify theclass or approve the settlement. Shortly before oralargument, the Second Circuit panel sua sponterequested briefing on "whether the district court hadsubject matter jurisdiction over claims concerningthe infringement of unregistered copyrights." Pet.App. 46a-47a.

After receiving the parties’ submissions andhearing oral argument, Judge Chester J. Straub (forhimself and Judge Ralph K. Winter) filed a majorityopinion on November 29, 2007, vacating the districtcourt’s certification of the class and approval of thesettlement on the ground that the court lacked juris-diction "to certify a class consisting of claims arisingfrom the infringement of unregistered copyrights andto approve a settlement with respect to those claims."Pet. App. 5a. The Second Circuit held that theregister-before-instituting-suit provision of copyrightlaw eliminates the otherwise plain judicial power toapprove the settlement of a class action

9

compensating and releasing claims that the court di.dnot then have jurisdiction to adjudicate.

Greatly misreading previously established circuitprecedent that 17 U.S.C. § 411(a) is "a jurisdictionalprerequisite to the right of the holder to enforce thecopyright in federal court" (Pet. App. 19a), themajority applied that requirement to the claims ofnot only the named plaintiffs but also every authorpotentially benefiting by the settlement, and furtherheld that supplemental jurisdiction under 28 U.S.C.§ 1367 was therefore unavailable. Pet. App. 20a-27a.

Petitioners (and plaintiffs-appellees as well) hadargued that §411(a) - which applies only to"institut[ing]’ an infringement action -was fullycomplied with because plaintiffs had registered eac:hof their allegedly infringed works in suit prior tofiling the lawsuit, as the Complaint alleged. Theycontended that the district court therefore possessedits usual power, in a case properly within its subjectmatter jurisdiction under 28 U.S.C. § 1338 and infull compliance with 17 U.S.C. § 411(a), to approve asettlement agreement that released claims that thecourt lacked subject matter jurisdiction toadjudicate, just as courts in proper cases havegranted injunctions protecting all of the plaintiffscopyrighted works, and not just registered works.

The majority rejected those arguments, holdingthat section 411(a) "requires that each classmember’s claim arise from a registered copyright" inorder for the district court to approve a settlementagreement providing any relief to the class. Pet.App. 24a. The majority then held that 28 U.S.C.§ 1367 "did not provide the District Court with

10

jurisdiction over the claims arising from the allegedinfringement of unregistered copyrights" because§ 411(a) is a "federal statute" that precludes supple-mental jurisdiction under the "except as expresslyprovided otherwise by Federal statute" clause of§ 1367(a).2 Pet. App. 25a-27a.

Judge John M. Walker, Jr. dissented on theground that "the fact that some of the otherwisepresumably valid copyrights have not been regis-tered is an insufficient basis for undoing this class-action settlement." Pet. App. 28a. Judge Walkernoted that the Second Circuit had "recent[ly held]that not all members of a settlement-only class needto possess a valid cause of action under the applica-ble law," id., citing Denney v. Deutsche Bank A.G.,443 F.3d 253 (2d Cir. 2006), and would have heldthat § 411(a)’s "registration requirement is moreakin to a claim-processing rule than a jurisdictionalprerequisite," under Bowles v. Russell, 127 S. Ct.2360 (2007), Eberhart v. United States, 546 U.S. 12(2005), and Kontriek v. Ryan, 540 U.S. 443 (2004).Pet. App. 28a-29a. He concluded that the easesrelied upon by the majority to support its ruling that

2 28 U.S.C. § 1367(a) provides:

(a) Except as . . . expressly provided otherwise by Federalstatute, in any civil action of which the district courts haveoriginal jurisdiction, the district courts shall have supplementaljurisdiction over all other claims that are so related to claims inthe action within such original jurisdiction that they form partof the same case or controversy under Article III of the UnitedStates Constitution. Such supplemental jurisdiction shallinclude claims that involve the joinder or intervention of addi-tional parties.

11

the District Court lacked jurisdiction, Weinberger v.Sslti, 422 U.S. 749 (1975), Well-Made Toy Mfg. Corp.v. Goffa Int’] Corp., 354 F.3d 112 (2d Cir. 2003), andMorris v. Business Concepts, Inc., 259 F.3d 65 (2dCir. 2001), were in any event distinguishable, sincethose cases entailed the power to adjudicate claims,where this one concerns the power to settle a casealready within a court’s jurisdiction. Pet. App. 42a-45a.

Plaintiffs, defendants and objectors all petitionedfor rehearing and rehearing in banc. They arguedthat the case was properly instituted in compliancewith § 411(a), and therefore the district court had thepower to approve a Rule 23 settlement providingcompensation for named plaintiffs and classmembers, and the release of claims beyond thosethat the court could have adjudicated. See Msts~-shits, 516 U.S. 367. By summary orders datedMarch 24 and April 15, 2008, the Second Circuitdenied the petitions. Pet. App. 59a-61a.

REASONS FOR GRANTING THE PETITION

Recognizing that the settlement of complex casesis in the public interest and that broad releases areoften necessary to achieve such settlements, thisCourt held in Mstsushita EIoc. Indus. Co. v. Epstein,516 U.S. 367 (1996), that the power to settle casesnecessarily entails the power to approve releases ofclaims beyond the approving court’s jurisdiction toadjudicate, so long as due process is satisfied. Thecourts of appeals and state courts have repeatedlyagreed. In conflict with those rulings, the SecondCircuit’s decision here holds that the district court

12

could not approve a settlement that released claimsthen beyond the court’s subject matter jurisdiction toadjudicate. That conflict provides a powerful reasonfor this Court to grant review.

In addition to that conflict are two other factorscompelling this Court’s review: the tension betweenthe decision below and this Court’s expectation inTasini that "[t]he parties (Authors and Publishers)may enter into an agreement allowing continuedelectronic reproduction of the Authors" works," 533U.S. at 505, and the public benefit afforded by thesettlement (and the corresponding harm caused bythe decision that the settlement is beyond thedistrict court’s jurisdiction to approve),

To restore the integrity of the national archivalelectronic record of the nation’s magazines and news-papers, class-wide releases are indispensable. Thepublishers and databases were willing to pay hand-somely to each freelance author claiming compensa-tion. But the Second Circuit’s decision makes anysettlement restoring those archives unachievable.Because all the relevant players in the newspaperand magazine publishing industry were involved andsubject to that ruling, this is not a dispute that canfurther percolate before this. Court need intervene.Leaving the Second Circuit’s decision intact wouldleave the electronic availability of complete news-paper and magazine contents through the late 1990ssubstantially incomplete at least through the expira-tion of copyright term for those articles manydecades from now.

This Court and other courts have repeatedly heldthat courts have the power in approving settlement

13

agreements to release claims that they lackjurisdiction to adjudicate. The Second Circuit’s deci-sion that such power does not exist in copyright casesbecause of § 411(a) - even though plaintiffs meticu-lously complied with that provision when the casewas instituted five years before the settlement agree-ment was reached and presented to the district court- conflicts with those decisions and presents animportant issue warranting this Court’s review.

THE DECISION THAT THE DISTRICT COURTLACKED JURISDICTION TO APPROVE ASETTLEMENT RELEASING CLAIMS ITCOULD NOT ADJUDICATE CONFLICTS WITHDECISIONS OF THIS AND OTHER COURTS

A. The Decision Conflicts with Established LawRegarding the Settlement and Release ofClaims

The Second Circuit erred, and its decisionconflicts with MstzusIHts and decisions of othercourts, by ignoring the settled law permitting therelease of claims over which a court lacks subjectmatter jurisdiction and focusing instead on thenarrow issue of whether the district court wouldhave had jurisdiction to adjudicate the claims thatwere being settled and released.

A long line of decisions have approved thesettlement and release of claims in the class actioncontext, irrespective of whether those claims were orcould have been presented due to Article III or otherjurisdictional defects. See, e.g., M~t~u~l~it~, 516 U.S.at 374-75 (state courts may release even claimssubject to exclusive federal jurisdiction); Lexecon Inc.

14

y. Milberg Weiss Bershad Hynes & Lerach, 523 U.S.26, 30 (1998) (holding that transferee courts lackjurisdiction to try transferred cases, but stating noobjection to a transferee court’s settlement of a caseit lacked power to try); In re Prudential Ins. Co. ofAm. Sales Practice Litig., 261 F.3d 355, 366 (3d Cir.2001) ("It is now settled that a judgment pursuant toa class settlement can bar later claims based on theallegations underlying the claims in the settled classaction . . . even though the precluded claim was notpresented, and could not have been presented, in theclass action itself.") (citation omitted); In re Corru-gated Container Antitrust Litig., 643 F.2d 195, 221(5th Cir. 1981) ("[e]ven when the court does not havepower to adjudicate a claim, it may still ’approverelease of that claim as a condition of settlement of(an) action (before it)."’); Class Plaintif£s y. City o£Seattle, 955 F.2d 1268, 1287 (9th Cir. 1992) (federalcourt may release not only claims alleged in thecomplaint, but also a claim ’%ased on the identicalfactual predicate as that underlying the claims in thesettled class action even though the claim was notpresented and might not have been presentable inthe class action."). Id. at 1287.3

3 See also Wal-Mart Stores, Inc. y. Visa U.S.A., Inc., 396 F.3d96, 108-09 (2d Cir. 2005) (court had jurisdiction to approvesettlement benefiting persons who asserted no claims and arethereby outside court’s jurisdiction); Grimes y. VitallnkCommu’ns Corp., 17 F.3d 1553, 1563 (3d Cir. 1994) ("it is widelyrecognized that courts without jurisdiction to hear certainclaims have the power to release those claims as part of a judg-ment"); Nottingham Partners y. Trans-Lux Corp., 925 F.2d 29,33-34 (1st Cir. 1991) (jurisdiction to approve releases does notrequire jurisdiction to adjudicate).

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As the Second Circuit had previously held inTBK Partners Ltd. y. Western Union Corp., 675 F.2d456, 460 (2d Cir. 1982) - a case contrary to andinexplicably ignored in the decision here - because ofthe strong public policy favoring "comprehensivesettlement," courts may approve class actionsettlements releasing claims which they had nojurisdiction to adjudicate:

[W]e have recognized the authority of a statecourt to approve a settlement that releases aclaim within the exclusive jurisdiction of thefederal courts [and] therefore conclude thatin order to achieve a comprehensive settle-ment that would prevent relitigation ofsettled questions at the core of a class action,a court may permit the release of a claimbased on the identical factual predicate asthat underlying the claims in the settledclass action even though the claim.., mightnot have been presentable in the class action.

TBK Partners, 675 F.2d at 460 (citations omitted;emphasis added). To use the formulation of aleading commentator, although the district courtlacked "jurisdiction to try [damage claims regardingunregistered works,] it had (through the ’alchemy ofsettlement’) the authority to dispose of them."Judith Resnik, Procedure as Contract, 80 NotreDame L. Rev. 598, 628 (2005) (footnote omitted).

Matsushita and the long line of cases thatprecede and follow it consider the power of courtswith regard to settlement ’%roadly [under] the law of’releases’ rather than narrowly [as an] issue offederal court jurisdiction." Wllliams y. GE Capital

16

Auto Lease, 159 F.3d 266, 268-69, 273-74 (7th Cir.1998) (treating members of a settlement class asbeneficiaries of the parties’ settlement agreement,rather than as parties). Approving a settlement inwhich the parties contract for the release of claimsnot previously placed before the court, in order toobtain complete peace for the defendant at a costthat the plaintiffs will accept, is not the same asadjudicating claims over which a court lacksjurisdiction. This Court has so held at least twice.

Matsushita, 516 U.S. at 381, held that theexclusive jurisdiction of federal courts to adjudicatefederal securities fraud claims does not precludestate courts from approving releases of such claims.The Court decided that a state court’s approval of aclasswide release of claims that the Court could nothave adjudicated is not the jurisdictionally barredadjudication of those claims. Similarly, in Local No.93, Int7 Assoc. of Firefighters v. City of Cleveland,478 U.S. 501 (1986) ("Firefighterd’), this Court heldthat federal courts could approve elasswidesettlement agreements providing for relief that thestatute prohibited the court from granting, since itwas the parties’ agreement, not judicial adjudication,that produced the terms agreed upon:

More importantly, it is the agreement of theparties, rather than the force of the law uponwhich the complaint was originally based,that creates the obligations embodied in aconsent decree. Consequently, whatever thelimitations Congress placed in § 706(g) on thepower of federal courts to impose obligationson employers or unions to remedy violationsof Title VII, these simply do not apply when

17

the obligations are created by a consentdecree.

478 U.S. at 522-23; see also id. at 526 ("the court isnot barred from entering a consent decree merelybecause it might lack authority . . . to do so after atrial.").

In conflict with that approach, the Second Circuithere totally ignored the law of releases. Instead, ittook a hyper-technical approach to § 411(a), treatingit as "jurisdictional" in the sense not only that othercourts have (as a precondition to the court’s power toadjudicate copyright infringement claims), but alsomore broadly as eliminating the long-recognizedjudicial power to approve a consensual resolution ofthe plaintiffs’ dispute providing for the release ofclaims that the court lacked power to adjudicate.

The conflict between those two approachesrequires this Court’s resolution. The split betweenthe Second Circuit’s denial of jurisdiction to approvea settlement agreement in this case, on the onehand, and Matsushita, Firefighters, and cases suchas Williams on the other, is particularly notable.Unlike those and the other cases discussed above,where the settling court may never have been able toacquire jurisdiction over certain of the settled claims,the § 411(a) registration obstacle here is curable intheory, and could be overcome by registeringunregistered works (if the necessary information toidentify freelance articles and contact class memberswere comprehensively available, which itunfortunately is not). The issue here is whetherCongress intended the §411(a) precondition toinstituting suit also to bar approval of a class action

18

settlement resolving an industry-wide problem thatcould not otherwise be addressed. This case wasproperly instituted under § 41 l(a), and itsconsensual resolution, completely consistent with theCourt’s prescription in Tasini, is obviously in theinterests of authors, publishers, the electronicarchives, and readers and researchers generally.

One can agree that § 411(a) is a precondition tothe institution of a copyright infringement action andto the judicial grant of damage remedies forunregistered works, as petitioners do, without profli-gately expanding § 411(a) to prohibit judicial appro-val of a private settlement, in a properly institutedaction after five years of complex mediation, merelybecause that settlement provides for the compensa-tion and release of claims involving unregisteredworks. Cf. Arbaugh y. Y & H Corp., 546 U.S. 500,510 (2006) ("Jurisdiction," this Court has observed,’is a word of many, too many, meanings’") (citationsomitted).

There had indisputably been no jurisdictionaldefect from institution of the suit until the motion forpreliminary approval in 2005. Because of theMatsu~hita principle, neither the district court northe parties here perceived a jurisdictional impedi-ment to the comprehensive settlement, just as theNinth Circuit and its lower court noticed nojurisdictional obstacle in approving a settlement thatprovided for compensation to class members withoutregard to registration. See Steiner v. Am. Broad.Co., No. CV 00-05798, at 4-6 (C.D. Cal. Apr. 20, 2005)(approving settlement of copyright infringementclass action that released claims on musicalcompositions and sound recordings without regard to

19

whether those works were registered), aft"d on othergrounds, No. 05-55773, 2007 U.S. App. LEXIS 21061(gth Cir. Aug. 29, 2007). Here, as in Steiner- wherethe Ninth Circuit should have vacated the settlementif the panel here is correct - the district court, withoriginal jurisdiction over the named plaintiffs’ claimsunder 28 U.S.C. §§ 1331 and 1338 in compliance with§411(a), had Article III power to approve asettlement agreement that compensated andreleased all infringement claims of the class ofauthors, regardless of registration.

B. The Decision Misapprehends the Text andPurpose of Section 411(a) of the CopyrightAct

The "law of releases" canvassed above demon-strates the panel’s error below, unless § 411(a) is anexception to the general rule permitting courts toapprove class action settlements that release andcompensate claims outside their jurisdiction toadjudicate. The panel did not discuss the generalrule and deemed the cases applying it "inapposite"without explanation. See Pet. App. 16a n. 4.Whether § 411(a) eliminates in copyright infringe-ment cases a court’s power to release claims outsideits jurisdiction to adjudicate is an exceptionallyimportant issue, and the Second Circuit’s resolutionof it is in obvious tension with the line of cases citedabove broadly establishing such power regardless ofjurisdiction to adjudicate.

The decision’s extended discussion of whether§ 411(a) is jurisdictional addressed a question thatno party had raised and which the cases canvassedabove render irrelevant. As the dissent perceived.,

2O

the issue that the panel raised sua sponte shouldhave been not whether § 411(a) is "jurisdictional"-aword that this Court has stated has many differingmeanings - but whether §411(a) deprived thedistrict court, in a case filed many years earlier incompliance with § 411(a) over which jurisdiction wasconferred by §§ 1331 and 1338, of its otherwise clearpower to approve a settlement providing for thecompensation and release of claims regardingunregistered works.

The district court did not assume or exercisejurisdiction to adjudicate infringement claims orgrant damages regarding unregistered works -powers that defendants agree the court lacked.Rather, it dispatched to mediation, and thenapproved the agreement privately resolving, a law-suit in which each claim of the named plaintiffscomplied with § 411(a) because, when the case was"institute[d]" in 2000, every U.S. work whoseinfringement plaintiffs complained of had been dulyregistered.

This Court rested its decision in MatsusIHts onthat very distinction, rejecting the objection thatDelaware had improperly resolved exclusively feder-al securities law claims: "While § 27 prohibits statecourts from adjudicating claims arising under theExchange Act, it does not prohibit state courts fromapproving the release of Exchange Act claims in thesettlement of suits over which they have properlyexercised jurisdiction .... " 516 U.S. at 381. TheSecond Circuit’s approach conflicts directly with thatdistinction which controlled the decisions inM~tsusl~ita and earlier in Fire£igt~ ters.

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Both the statutory text and the purposeunderlying § 411(a) strongly suggest that Congressdid not divest district courts of their usual power toconsider and approve a settlement providing for therelease of claims that could not at present beadjudicated.

The statutory text sets a registration precondi-tion before an infringement action may be"instituted." Filing a complaint, not certification of aclass in connection with settlement many years later,is the institution of a lawsuit. See Herman &MacLean y. Huddleston, 459 U.S. 375, 378 (1983)(one of six Supreme Court class action decisions,three from before the 1976 enactment of theCopyright Act, in which "instituted" consistentlyrefers to the initial filing of a lawsuit, not tosubsequent settlement class certification); LocalUnion No. 38, Sheet Metal Workers’ Int 7 Ass’n, AFL-CIO v. Pelella, 350 F.3d 73, 82 (2d Cir. 2003) ("Aparty institutes an action when he commences ajudicial proceeding."); see also Grupo Datatlux v.Atlas Global Group, L.P., 541 U.S. 567, 571 (2004)(jurisdiction is determined at the time of filing,"regardless of the costs" that rule imposes).Moreover, there is strong reason to attend to thestatutory verb "instituted," since the 1976 Actreplaced the 1909 Act’s "no action ... shall bemaintained," see New York Times Co. v. Star Co.,195 F. 110, 111 (2d Cir. 1912) (emphasis added), with"no action.., shall be instituted."

Plaintiffs instituted their infringement action infull compliance with § 411(a). It was nearly fiveyears later before the parties presented a proposedsettlement in which, to resolve the claims within the

22

court’s clear jurisdiction, defendants agreed toprovide payments to (and obtain releases from) aclass of freelance authors. The court approved thesettlement and certified the requested class ofauthors after reviewing the settlement for fairnessand reasonableness under Rule 23(e). Just as inMatsushita and Firefighters, the district court heredid not adjudicate claims beyond its jurisdiction, butsimply approved a private contractual settlement asfair and reasonable. Neither approval of the settle-ment nor the concomitant certification of the classwas the "institution" of an "action for infringement ofthe copyright." That happened five years earlier, incompliance with § 411(a).

The refusal to apply § 411(a) as written - and thedecision to apply it as a limitation on not only theinstitution of suit but also the permissible scope ofsettlement- conflicts with this Court’s warning that"[w]e must not give jurisdictional statutes a moreexpansive interpretation than their text warrants."Exxon Mobil Corp. v. Allapattal~ Sorvs., 545 U.S.546, 558, 549 (2005). Exxon directs focus to whether"the action is one in which the district courts wouldhave original jurisdiction," and away from whethereach putative class member could herself have beena plaintiff. Id. at 558. Exxon teaches that classaction settlements may compensate (and release theclaims of) absent class members who could not havethemselves satisfied the requirements of subjectmatter jurisdiction and sued, see id. at 558-59.Contrary to that approach, the Second Circuitstretched § 411(a) far beyond its text and intent, as ifit repealed, in copyright infringement cases, courts’settled authority to advance the public interest by

23

settling cases, even when the settlement agreementbroadly compensates and releases claims that thecourts could not adjudicate.

Nor does § 411(a)’s text or purpose suggest anycongressional purpose to strip district courts of theirusual power to approve settlements releasing claims(even claims beyond the court’s power to adjudicate).Section 411(a)’s purpose is to induce registration anddeposit, which it does by providing that "a copyrightowner who has not registered his claim can have avalid cause of action against someone who hasinfringed his copyright, but he cannot enforce hisrights in the courts until he has made registration."H. Rep. No. 94-1476, at 157 (1976), reprinted in 1976U.S.C.C.A.N. 5659, 5773. Consistent with statutorytext and purpose, the settlement entailed no judicialenforcement of unregistered copyrights, no adjudica-tion of infringement claims regarding such works,and no judicial grant of copyright remedies. SeeMa tsushita, supra.4

4 The leading commentator agrees that once jurisdiction is

properly obtained in compliance with § 411(a) at the outset oflitigation, a court "may order remedies such as seizure orinjunction as permitted by statute, without reference towhether the precise items seized or enjoined are covered by aregistration certificate." 2 Nimmer on Copyright ¶ 7.16[C][3](footnotes omitted). Afortiori, § 411(a) should not be overreadto preclude courts from exercising in copyright cases thegeneral powers conferred by Article III (such as approvingsettlements) that do not reflect the grant of copyright remedies.See also Supplementary Report of the Register of Copyrights onthe General Revision of the U. S. Copyright Law: 1965 RevisionBill, 89th Cong., 1st Sess., page 126 (only "the special remediesof statutory damages under section 504(c) and attorney’s feesunder section 505 should be dependent on registration").

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Construing § 411(a) to preclude settlement ofclaims where releases covering unregistered worksare required is contrary to the approach taken inW~shingtonian Publ’g Co. v. Pearson, 306 U.S. 30, 41(1939). Pearson rejected a comparably overreachingapplication of a registration statute because it"would not square with the words actually used inthe statute, would cause conflict with its general pur-pose, and in practice produce unfortunate consequen-ces." The Court preferred a construction that provid-ed "adequate" compulsion to one that would have "amore drastic effect [that] would tend to defeat thebroad purpose of the enactment." Id.

Avoiding similarly undue "drastic" and unwar-ranted impact, courts have consistently read § 411(a)to preclude adjudication of damage claims but notthe grant of otherwise appropriate injunctive reliefregarding future or unregistered works or theapproval of broad settlement agreements, because todo so would defeat the broad purpose of copyrightlaw.~ By contrast, the Second Circuit’s overreachingapplication of § 411(a) ignores its language, conflictswith its purpose, defeats protection of copyrightedworks (where, as here, damages for any individualwork might not exceed the cost of registration),precludes agreed-on compensation to authors, anddeprives the public of the benefits of the restored

.~ Among the cases approving injunctions reaching unregisteredworks are Perfect 10, Inc. v. Amazon.corn, Inc., 508 F.3d 1146,1154 n.1 (9th Cir. 2007); Olan Mills, Inc. v. Linn Photo Co., 23F.3d 1345, 1349 (Sth Cir. 1994); and Pac. and S. Co. v. Duncan,744 F.2d 1490, 1499 n.17 (11th Cir. 1984).

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electronic archives that the settlement would makepossible.

C. The Decision Cannot Be Reconciled WithThis Court’s Precedent Governing thePhrase "Except as Expressly Provided"

The "law of releases" canvassed above makesplain that the Second Circuit erred in looking toindependent jurisdiction with respect to the releasedclaims. But even if it was correct (and all those othercases wrong), its decision that supplementaljurisdiction is unavailable misreads 28 U.S.C.§ 1367, overreads § 411(a), and is irreconcilable withBreuer v. Jim’s Concrete of Brevard, Inc., 538 U.S.691,696-97 (2003).

Like the removal statute at issue in Breuer, 28U.S.C. § 1367 confers federal jurisdiction broadlyunless Congress has "expressly provided otherwise":"except as expressly provided otherwise byFederal Statute," courts have supplemental jurisdic-tion "over all other claims that are so related toclaims in the action within such original jurisdictionthat they form part of the same case or controversy

Such supplemental jurisdiction shall includeclaims that involve the joinder or intervention ofadditional partied’ (emphasis added).

Breuer held that every word in the phrase"except as otherwise expressly provided by Act ofCongress" had to "be taken seriously." But theSecond Circuit pointed to nothing whatever in thetext of § 411(a), and there is nothing, that "expressly"provides for the inapplicability of supplementaljurisdiction in connection with approving settlementsin eases properly instituted under § 411(a). To the

26

contrary, the panel made precisely the error that thepetitioner in Breuer did, reading the jurisdictionalstatute as if it lacked the word "expressly."

The Second Circuit was simply incorrect instating that "Section 1367(a) excepts from its reachthose cases in which another federal statute deniesjurisdiction" (Pet. App. 25a); rather, it excepts fromits reach only those cases in which another federalstatute "expresslj/’ provides that supplemental juris-diction is inapplicable. To use the analysis employedby Breuer, 538 U.S. at 694, "Nothing on the face of[17 U.S.C. § 411(a)] looks like an express prohibitionof [supplemental jurisdiction], there being nomention of’ supplemental jurisdiction, let alone ofprohibiting its exercise if that is even necessary inapproving settlement agreements.

II. THE DECISION CANNOT BE RECONCILEDWITH THIS COURT’S EXPECTATION INTASINI THAT AUTHORS AND PUBLISHERSMAY ENTER INTO ENFORCEABLE AGREE-MENTS ALLOWING CONTINUED ELECTRON-IC REPRODUCTION OF AUTHORS’ WORKS

The holding below ignores and contradictsTasin~s prescription that, in order to restore theintegrity of electronic archives, "It]he parties(Authors and Publishers) may enter into an agree-ment allowing continued electronic reproduction ofthe Authors’ works; they, and if necessary the courtsand Congress, may draw on numerous models fordistributing copyrighted works and remuneratingauthors for their distribution." 533 U.S. at 505.

27

That paragraph in Tasini prompted authors andtheir organizations, the database defendants, andnewspaper and magazine publishers (some of whichwere defendants, others of which were participantsunder the spectre of being impleaded if litigationwent forward) to invest four years of time and effortand considerable resources in a complex and difficultmediation under the guidance of one of the nation’smost distinguished mediators, Kenneth Feinberg.By the conclusion of the mediation, which Mr.Feinberg described as the longest in American legalhistory, the parties to the mediation had accom-plished what none of them believed possible yearsearlier: a settlement of all the issues that all threesides (authors, databases, and periodical publishers)could live with and enthusiastically support, andwhich served the public interest by providing for therestoration of archives that had been riddled withholes as a result of T~sinL

The Second Circuit’s erroneous holding precludesthe sine qua non of that or indeed any judicial cure -classwide release of claims with respect to registeredand unregistered works so as to permit retention ofmillions of news and similar articles in electronicarchives, for which the publishers and databaseswere willing to pay handsomely with respect to eachclaim released.

The parties worked hard and successfully to"enter into an agreement allowing continuedelectronic reproduction of the Authors’ works," ascontemplated by T~sini, that would avoid the perm-anent degradation of on-line archival databases andmaintain a permanent, accessible record for thepublic and scholars. Without classwide release of

28

infringement liability, there is simply no way torestore the archives, as separate agreements withthe tens of thousands of freelance authors whoseworks (written since 1978) pose a continuing threatof liability are wildly impracticable. Due principallyto inadequate information and the prohibitive cost ofindividualized article and writer identification andnegotiation, it is not possible to identify, contact, andseparately license rights from each of the manythousands of authors who wrote articles over severaldecades (where the publishers thought that they hadobtained adequate rights and therefore generallylacked information to identify freelance articles or tocontact freelance authors). Absent classwide release-es, articles already removed will remain taken down(to the considerable extent that publishers withdrewthem after Tasinl) and additional swaths of articleswill be taken down (by publishers who either canidentify freelance works or who will, proactively,take down all possibly freelance articles for theperiod before permissions practices were reformed inlight of

The Second Circuit’s vitiation of precisely the pri-vate agreement Tasinl contemplated ignored thebroad grant of jurisdiction in § 1338. The decisionwas not compelled by, and indeed ignores, the plainlanguage of § 411(a), with which plaintiffs quiteliterally complied according to its terms. Further,the decision gave insufficient weight to the strongpublic policy favoring consensual settlement ofbroadscale disputes, particularly those that affect thepublic interest. McDermott, Inc. v. AmClyde, 511U.S. 202, 215 (1994) ("[P]ublic policy wisely encour-ages settlements."). The policy of facilitating such

29

settlements is a principal reason for the rulepermitting courts to release claims they lackjurisdiction to adjudicate:

Public policy strongly favors thepretrial settlement of class action lawsuits¯ . . Complex litigation - like the instantcase - can occupy a court’s docket for yearson end, depleting the resources of theparties and the taxpayers while renderingmeaningful relief increasingly elusive.Accordingly, the Federal Rules of CivilProcedure authorize district courts to facil-itate settlements in all types of litigation,not just class actions. . Although classaction settlements require court approval,such approval is committed to the sounddiscretion of the district court.

Modern class action settlementsroutinely incorporate settlement bar or-ders such as the one at issue in this case..

The reason for this trend is that barorders play an integral role in facilitatingsettlement. Defendants buy little peacethrough settlement unless they areassured that they will be protected againstcodefendants’ efforts to shift their lossesthrough cross-claims for indemnity,contribution, and other causes related tothe underlying litigation.

In re United States 0ii & Gas Litig., 967 F.2d 489,493-94 (11th Cir. 1992) (citations omitted). As theThird Circuit explained,

3O

"[I]t may seem anomalous...thatcourts without jurisdiction to hear certainclaims have the power to release thoseclaims as part of a judgment. However,[courts] have endorsed the rule because itserves the important policy interest ofjudicial economy by permitting parties toenter into comprehensive settlements."

Prudential, 261 F.3d at 366 (citations omitted); seealso Class Plaintiffs, 955 F.2d at 1287 (because"[S]trong judicial policy [ ] favors settlements, partic-ularly where complex class action litigation isconcerned," "federal courts may release not onlythose claims alleged in the complaint, but also aclaim based on the identical factual predicate as thatunderlying the claims in the settled class action eventhough the claim was not presented and might nothave been presentable in the class action").

The Second Circuit held that courts lackjurisdiction to approve settlements containing thesine qua non of any agreement "allowing continuedelectronic reproduction of the Authors’ works," andthat Congress deprived courts in copyright cases oftheir longstanding power to approve settlementsreleasing claims that they may at present lack powerto adjudicate. Those holdings are at odds with thepremise in Tasini and warrant this Court’s review.

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CONCLUSION

For all the aforementioned reasons, the petitionfor a writ of certiorari should be granted.

July 21, 2008

Respectfully submitted,

Charles S. Sims,Counsel o£ Record

Joshua W. RuthizerPROSKAUER ROSE LLP1585 BroadwayNew York, NY 10036-8299(212) 969-3000 (voice)(212) 959-2900 (fax)Counsel for PetitionerRood Elsevier Inc.

James F. RittingerSATTERLEE STEPHENSBURKE & BURKE230 Park AvenueNew York, NY 10169(212) 404-8770Counsel for Petitioners TheDialog Corporation,Thomson Corporation,Gale Group, Ine. and WestPublishing Company

Henry B. GutmanSIMPSON THACHER &BARTLETT LLP425 Lexington Avenue

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New York, NY 10017(212) 455-3180Counsel for Petitioner DowJones Reuters BusinessInteractive LLC, d/b/aFactiva

James L. HallowellGIBSON, DUNN &CRUTCHER LLP200 Park Avenue47th FloorNew York, NY 10166(212) 351-3804Counsel for Petitioner DowJones & Company, Inc.

Kenneth RiehieriGeorge FreemanTHE NEW YORK TIMESCOMPANY620 Eighth Ave.New York, NY 10018(212) 556-1558Counsel for Petitioner TheNew York Times Company

Brian WalchLATHAM & WATKINSSears Tower, Suite 5800Chicago, IL 60606(312) 876-7738CounseI for PetitionerProQuest Company

Christopher M. Graham

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LEVETT ROCKWOODP.C.33 Riverside AvenueWestport, CT 06880(203) 222-0885Counsel for PetitionerNewsBank, Inc.

Ian BallonGREENBERG TRAURIGLLP2450 Colorado Ave., Suite400ESanta Monica, CA 90404(310) 586-6575Counsel for PetitionersKnight Ridder, Inc.,Knight Ridder Digital andMediastream, lne.

Michael DennistonBRADLEY, A_RANT, ROSE& WHITE, LLP1819 Fifth Avenue NorthBirmingham, AL 35203(205) 521-8244Counsel for PetitionerEBSCO Industries, Inc.

Raymond CastelloFISH & RICHARDSON PCCitieorp Center- 52ndFloor153 East 53rd StreetNew York, NY 10022(212) 641-2364

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Counsel for PetitionerUnion Tribune PublishingCompany